December 7, 2021

Volume XI, Number 341

Advertisement
Advertisement

December 06, 2021

Subscribe to Latest Legal News and Analysis

Intrinsic Evidence Seals the Deal for Seabed

In Seabed Geosolutions (US) Inc. v. Magseis FF LLC, (Fed. Cir. Aug. 11, 2021), the Federal Circuit vacated and remanded the PTAB’s finding of nonobviousness, holding that the PTAB erred in using extrinsic evidence to construe terms where the intrinsic evidence was clear.

Magseis’s challenged patent, directed to “seismometers for use in seismic exploration,” describes using a receiver, called a geophone, to receive a “seismic reflection” after an acoustic signal is sent into the earth. Magseis’s predecessor sued Seabed for patent infringement, and Seabed petitioned for inter partes review. The Board found, based solely on extrinsic evidence, that “‘geophone internally fixed within [the] housing’ required a non-gimbaled geophone,” because the art at the time taught a special meaning for the term “fixed”: that the geophone was “not gimbaled.”  Based on this construction, the Board determined that the challenged claims were not unpatentable. Seabed appealed.

On appeal, the Federal Circuit reversed and vacated the Board’s decision. The Court focused on whether the record contained sufficient intrinsic evidence to construe the geophone limitation so as to render the use of extrinsic evidence unnecessary. Ultimately, the Court answered this question in the affirmative, holding that the Board’s reliance on extrinsic evidence was an error because there was sufficient intrinsic evidence to construe the claim.

In reaching its decision, the Court explained that intrinsic evidence will be given primacy and extrinsic evidence should only be used to construe claims if it is consistent with intrinsic evidence.  Here, the Board’s construction improperly used extrinsic evidence to “alter the meaning of ‘fixed’ that is clear from the intrinsic evidence.”

Turning first to the claims which recite a “geophone internally fixed within [the] housing,” the Court held that the term “fixed” has its ordinary meaning, “i.e., attached or fastened.” Further, the Court held the adverb “internally” and the preposition “within” indicated the geophone’s relationship with the house as opposed to the type of geophone.

The Court noted its construction was consistent with the specification, which said “nothing about the geophone being gimbaled or non-gimbaled.” Instead, the specification repeated 18 times that “the invention is ‘self-contained’ and explain[ed] that it ‘requires no external wiring or connection.’”

Finally, the Court noted its construction was also consistent with the patent’s prosecution history, in which the applicant equated the claim term “internally fixed within” with “disposed, and electrically connected, within.” In the Court’s view, the prosecution history thus demonstrated that “fixed” meant “mounted.”

In sum, the Federal Circuit held that there was sufficient intrinsic evidence—the patent’s claims, specification, and prosecution history—to construe the claims without turning to extrinsic evidence.  The Board’s decision to do so was thus an error.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 237
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement

About this Author

Associate

Shannon Patrick focuses on patent litigation related to Abbreviated New Drug Applications (ANDA), patent prosecution, proceedings before the Patent Trial and Appeal Board (PTAB), and client counseling. She has technical experience in the chemical and mechanical fields, including technologies such as aluminum alloys and joining solutions, as well as a background in biology.

Shannon’s litigation experience with district court matters includes preparing motions, managing discovery efforts, and working with expert witnesses. She has participated in...

404 653 6558
Brooke Wilner Patent Attorney Finnegan
Associate

Brooke Wilner, a registered patent attorney, enjoys a varied trial and appellate litigation practice. She practices before U.S. district courts, state courts, the Patent Trial and Appeal Board (PTAB), the U.S. Court of Appeals for the Federal Circuit (CAFC), and the U.S. International Trade Commission (ITC).

Brooke represents both patent owners and accused infringers across a broad range of mechanical and electrical technologies, including clients in the aerospace, automotive, consumer products, software, and hardware industries. She has...

404-653-6454
Amanda Murphy IP Lawyer Finnegan
Partner

Amanda Murphy, Ph.D., focuses her practice on strategic client counseling, portfolio management, and patent prosecution for a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.

Amanda provides patentability opinions, prepares new patent applications, prosecutes U.S. and foreign applications, and represents appellants before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). She has experience in prosecuting inter partes ...

202 408 4114
Advertisement
Advertisement
Advertisement